I/P Engine, Inc. v. AOL Inc.

915 F. Supp. 2d 736, 2012 U.S. Dist. LEXIS 166559, 2012 WL 5880265
District Court, E.D. Virginia·Decided November 20, 2012·No. Civil Action No. 2:11cv512·Published·Cited by 3 cases

Opinion

MEMORANDUM OPINION AND ORDER

RAYMOND A. JACKSON, District Judge.

Before the Court is the issue of whether the equitable defense of laches should apply in this case. The Court initially styled its ruling from the bench as a response to a renewed motion for a Judgment as a Matter of Law on Laches from the Defendants. However, in reviewing the trial transcript, the Court notes that Defendants made no such Rule 50(a) motion regarding laches. The Plaintiff, however, did make a Rule 50(a) motion regarding laches and provided argument on the matter. Furthermore, Defendants responded to this motion and proffered additional evidence for the Court’s consideration, which Plaintiff received and had an opportunity to respond to, but did not. Creating additional confusions is the fact that because laches is an equitable defense to be resolved as to both fact and law by the Court, a Rule 50(a) motion is inappropriate from either party. In the end, however, the Court will not place form over substance, particularly when all parties have been given a fair opportunity to litigate on the issue. Accordingly, the Court construes Plaintiffs Rule 50(a) Motion for Judgment as a Matter of Law on Laches as a Motion for Partial Findings pursuant to Rule 52(c). By making their inappropriate Rule 50(a) Motion, the Court determined that Plaintiff had placed into evidence all relevant materials regarding laches, a determination that was only questioned by Plaintiff after the Court provided its initial ruling against them on laches from the bench on October 31, 2012. Even when given an opportunity to proffer additional evidence with the benefit of consideration of the Court’s ruling on the matter, the Plaintiff put forward a proffer that contains information already in the record or that is irrelevant in light of relevant case law.

Therefore, having taking evidence on laches concurrently with the jury trial on infringement, invalidity, and damages and after thoroughly reviewing the evidence, arguments (including those made on sum[741] mary judgment), and record in this case, as well as considering Rule 52’s advisory committee’s notes, which “authorizes the court to enter judgment at any time that it can appropriately make a dispositive finding of fact on the evidence,” the Court found that this case was ripe for decision and ruled from the bench on the issue of laches. As the Court indicated when it ruled on laches, it reserved the right to further elaborate on its decision in a written opinion. For the reasons stated herein and on the record, the Court finds that the doctrine of laches should apply to all defendants in this case.

I. The Equitable Doctrine of Laches

The Patent Act does not provide a statute of limitations for infringement claims. However, it is well-established law that the equitable doctrine of laches may bar a patentee’s recovery of pre-filing damages where (1) the patentee knew of his claim, but unreasonably delayed in filing suit and (2) that delay caused material prejudice to the alleged infringer. See Hair v. United States, 350 F.3d 1253, 1257 (Fed.Cir.2003) (“Even without a specific statutory bar to call into play, courts will impose a parallel bar' — under the rubric of laches — in cases in which the plaintiff has failed to act in a reasonably prudent manner to protect and enforce rights, and when a perceived injustice to the defendant exists.”). With respect to the first requirement — knowledge of infringement coupled with unreasonable delay in pursing claims against said infringement — The Federal Circuit has held that “[t]he length of time which may be deemed unreasonable has no fixed boundaries but rather depends on the circumstances.” A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1032 (Fed.Cir.1992). Furthermore, “[t]he period of delay is measured from the time the plaintiff knew or reasonably should have known of the defendant’s alleged infringing activities to the date of suit. However, the period does not begin prior to issuance of the patent.” Id. (citations omitted). Put another way, “[t]he period of delay begins at the time the patentee has actual or constructive knowledge of the defendant’s potentially infringing activities.” Wanlass v. GE, 148 F.3d 1334, 1337 (Fed.Cir.1998) (emphasis added).

With respect to constructive knowledge, the Federal Circuit charges a patentee “with making the inquiry that a diligent and reasonably prudent patentee would make to determine whether another device infringes his patent.” Odetics, Inc. v. Storage Tech. Corp., 919 F.Supp. 911, 917 (E.D.Va.1996) (citing Jamesbury v. Litton Industrial Products, Inc., 839 F.2d 1544, 1552 (Fed.Cir.), cert. denied, 488 U.S. 828, 109 S.Ct. 80, 102 L.Ed.2d 57 (1988)). Moreover, the Supreme Court holds that “the plaintiff is chargeable with such knowledge as he might have obtained upon inquiry, provided the facts already known by him were such as to put upon a man of ordinary intelligence the duty of inquiry.” Johnston v. Standard Mining Co., 148 U.S. 360, 370, 13 S.Ct. 585, 37 L.Ed. 480 (U.S.1893). With respect to the question of when a patentee has a duty to make inquiries as to whether its patents are being infringed, the Court finds the standard laid out in Odetics to be persuasive and applicable in this case:

If a patentee knows of the existence of a product or device that (i) embodies technology similar to that for which he holds a patent and (ii) uses that similar technology to accomplish a similar objective, he has a duty to examine the product or device more closely to ascertain whether it infringes his patent. If he shirks this duty, he does so on peril of triggering the laches period and perhaps ultimately losing his right to recover damages for the infringement.

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I/P Engine, Inc. v. AOL Inc., 915 F. Supp. 2d 736, 2012 U.S. Dist. LEXIS 166559, 2012 WL 5880265 (E.D. Va. 2012).

915 F. Supp. 2d 736 (I/P Engine, Inc. v. AOL Inc.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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